OPPOSITION Nо B 3 092 669

Hugo Boss Trade Mark Management GmbH & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Fujian Rovos Fitness Co., Ltd., Xibeiyang Industrial Zone, Fuan, Fujian, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 Rue Ramey, 75018 Paris, France (professional representative).

On 18/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 669 is partially upheld, namely for the following contested goods:

Class 10: Vibromassage devices; electric massage appliances, namely, electric vibrating massager; massage mitts; gloves for massage; beds specially made for medical purposes.

Class 20: All the contested goods in this class.

Class 28: All the contested goods in this class.

2. European Union trade mark application No 18 026 423 is rejected for the goods listed under point 1 of this dictum. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark (EUTM) application No 18 026 423 (figurative mark). The opposition is based on EUTM registration No 49 221 ‘BOSS’ (word mark) for which both Article 8(1)(b) and Article 8(5) EUTMR were invoked, and EUTM registration No 10 837 565 ‘BOSS’ (word mark) and EUTM registration No 18 020 098 ‘HUGO BOSS’ (word mark) for which Article 8(1)(b) EUTMR was invoked.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 18 020 098 ‘HUGO BOSS’.

a) The goods

The goods on which the opposition is based are the following:

Class 10: Condoms; sex aids.

Class 20: Furniture, mirrors, frames; hangers; clothing bags of plastic; coathooks; displays, stands and labels (not of metal); textile labels and tags; curtains and drapes.

Class 28: Games and playthings; gymnastic and sporting articles, in particular skis, golf clubs and tennis racquets; balls; gymnastic and sports articles (included in Class 28).

The contested goods are the following:

Class 10: Medical devices for nonsurgical cosmetic treatments; vibromassage devices; massage apparatus for massaging necks, backs and feet; electric massage appliances, namely, electric vibrating massager; massage mitts; gloves for massage; medical apparatus and instruments for use in surgery; body rehabilitation apparatus for medical purposes; medical instruments for analysing and identifying bacteria; physiotherapy apparatus; medical diagnostic apparatus, analytical apparatus for medical purposes and; blood pressure measuring apparatus; beds specially made for medical purposes; invalids’ hoists; bandages for joints, anatomical; elastic bandages; vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance.

Class 20: Furniture for house, office and garden; rocking chairs; chairs; easy-chairs; armchairs; metal chairs; seating furniture; office furniture; head-rests [furniture]; hospital beds; massage tables; ergonomic chairs for use in seated massages; floating recreational lounge chairs; swivel chair; swing chair.

Class 28: Fitness machines and equipment, namely, weights, treadmills, rowing machines, stair stepping machines, resistance machines, stationary cycles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 10

The contested vibromassage devices; electric massage appliances, namely, electric vibrating massager; massage mitts; gloves for massage overlap with the opponent’s sex aids in the same class. The contested vibrating massaging devices, in particular, form a rather broad category without any specification as to the actual purpose of these pieces of apparatus. Accordingly, such a general wording must be interpreted as applying to apparatus intended for all forms of massage, including sexual or erotic massage. Therefore, they are identical.

The contested beds specially made for medical purposes are similar to the opponent’s furniture in Class 20. As the latter includes hospital beds, these goods usually coincide in producers, relevant public and distribution channels.

However, the remaining contested goods, namely medical devices for nonsurgical cosmetic treatments; massage apparatus for massaging necks, backs and feet; medical apparatus and instruments for use in surgery; body rehabilitation apparatus for medical purposes; medical instruments for analysing and identifying bacteria; physiotherapy apparatus; medical diagnostic apparatus, analytical apparatus for medical purposes and; blood pressure measuring apparatus; invalids’ hoists; bandages for joints, anatomical; elastic bandages; vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance are dissimilar to all the opponent’s goods in Class 10 (condoms; sex aids) but also to the goods in Class 20 (mainly furniture) and in Class 28 (mainly games, playthings, gymnastic and sports articles). The goods in question have a different nature and intended purpose, are produced by different undertakings and sold through specific distribution channels. Furthermore, they are neither complementary, nor in competition. These contested goods can have a wide range of purposes but are essentially medical apparatus and instruments generally used for the diagnosis or treatment of human or animal diseases and conditions. Consequently, the purpose of these goods is, in principle, not to achieve and enhance sexual arousal. It is also noted that a variety of goods may be used in a sexual context without necessarily being considered complementary. Therefore, and in the absence of any particular arguments or evidence adduced by the opponent to alter this finding, they are considered dissimilar.

Contested goods in Class 20

The contested furniture for house, office and garden; rocking chairs; chairs; easy-chairs; armchairs; metal chairs; seating furniture; office furniture; head-rests [furniture]; hospital beds; massage tables; ergonomic chairs for use in seated massages; floating recreational lounge chairs; swivel chair; swing chair are included in the broad category of the opponent’s furniture. Therefore, they are identical.

Contested goods in Class 28

The contested fitness machines and equipment, namely, weights, treadmills, rowing machines, stair stepping machines, resistance machines, stationary cycles are included in the broad category of the opponent’s gymnastic and sports articles (included in Class 28). Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

HUGO BOSS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘BOSS’ of the signs is an English word which will be understood by a part of the public to refer to ‘the person who is in charge of an organisation and who tells others what to do’ (information extracted from Cambridge Dictionary on 04/11/2020 at https://dictionary.cambridge.org/dictionary/english/boss?q=boss_1). Another part of the public in the EU will not understand it. Finally, it could be perceived by part of the public as a family name (albeit a rare one). The word ‘BOSS’ does not have any meaning related to the goods in question in any of the above scenarios and is therefore considered to have a normal degree of distinctiveness.

The element preceding ‘BOSS’ in the earlier mark, ‘HUGO’, will be perceived as a traditional given name that has become quite popular in several Member States, including France, Germany, Portugal, Spain (where it was the most popular male first name in 2018) and the United Kingdom. As it has no meaning in relation to the relevant goods, it is has a normal degree of distinctiveness. However, family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname, provided it is not common in the relevant territory, could imply the existence of some link between them (e.g. identity of the persons or a family link). The earlier mark is a word mark, so it is irrelevant whether it is written in upper- or lower- case characters. Additionally, for the same reason, the earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements.

The contested sign’s component ‘bOSS’ is followed by the component ‘CARE’. Notwithstanding the absence of a space between these two, the reader will identify them as two separate components due to the use of different stylisations: ‘bOSS’ in black bold and ‘CARE’ all in upper-case black regular letters. The letter ‘A’ is depicted in a more stylised manner, in that the horizontal bar is omitted; however, it remains readily recognisable by the consumers. Moreover, the parts of the public that identify at least one concept in the contested sign, although it is composed of one verbal element, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This is the case for example for the English-speaking part of the public: for them, the contested sign will be composed of ‘bOSS’, placed in first position, and ‘CARE’, in second position. The latter, for this part of the public, is considered weak in relation to the goods at issue: those in Class 10 are massage or medical beds; those in Class 28 are fitness articles (i.e. for the care of the body); and those in Class 20 are furniture, which includes or could include hospital furniture and/or furniture for the care of the elderly or disabled (like hospital beds or seating furniture) or items that are comfortable and safe due to their ergonomic shape. Therefore, the term ‘bOSS’ is the most distinctive element of the contested sign. Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Based on the above analysis, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The public will perceive the stylisation of the contested sign as a merely ornamental feature serving to embellish the verbal element itself. The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the word/sound ‘BOSS’, but they differ in the word/sound ‘HUGO’ of the earlier mark and ‘CARE’ of the contested sign, which will have a lesser impact on the consumers than the common word ‘BOSS’, as shown above. Visually, they further differ in the stylisation of the contested sign which, however, does not prevent consumers from perceiving the letters as such. Furthermore, as consumers are accustomed to the stylisation of verbal elements in trade marks, they will perceive the stylisation of the contested sign’s components as merely a decorative depiction of the verbal elements.

Therefore, considering the distinctiveness and the intrinsic value of the various elements, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Insofar as the signs will be associated by the relevant public with the surname/word ‘BOSS’, which for the reasons explained above is the element with the greatest trade mark significance in both signs, they are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are partly identical, partly similar and partly dissimilar. The identical and similar goods target the general and professional public with a degree of attention varying from average to high. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The earlier mark enjoys a normal degree of distinctiveness. The signs are similar to an average degree on all levels (visual, aural and conceptual), due to the coincidence in the most distinctive or the most inherently valuable element of the signs, ‘BOSS’.

Considering the addition of the weak element ‘CARE’ in the second position of the contested sign, and the link that the consumers may make when recognising the same uncommon surname in both marks, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for example to denote a new line of body care products.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, in the form of a likelihood of association, on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 020 098. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

 EUTM registration No 10 837 565 ‘BOSS’ for mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whale bone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics in Class 20;

 EUTM registration No 49 221 ‘BOSS’ for gymnastic and sporting articles, namely skis, snow boards, surf boards, golf clubs and tennis rackets in Class 28.

Since these marks cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Therefore, the Opposition Division will proceed with the examination of the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to earlier EUTM registration No 49 221 for which the opponent claimed repute in the European Union.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark registration No 49 221 for the word mark ‘BOSS’ has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 25/02/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

The opposition based on this ground is directed against the following remaining goods:

Class 10: Medical devices for nonsurgical cosmetic treatments; massage apparatus for massaging necks, backs and feet; medical apparatus and instruments for use in surgery; body rehabilitation apparatus for medical purposes; medical instruments for analysing and identifying bacteria; physiotherapy apparatus; medical diagnostic apparatus, analytical apparatus for medical purposes and; blood pressure measuring apparatus; invalids’ hoists; bandages for joints, anatomical; elastic bandages; vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 16/05/2020 the opponent submitted the following evidence:

• A Wikipedia article on the ‘Hugo Boss’ company accessed on May 2018 (enclosure 1), stating that the ‘company went public in 1985 and introduced a fragrance line that same year, added men’s and womenswear diffusion lines in 1997, a full women’s collection in 2000 as well as children’s clothing in 2008/2009, and has since evolved into a major global fashion house with more than 1,100 company-owned retail stores worldwide (2016)’. Moreover, it states that ‘Hugo Boss has at least 6,102 points of sale in 124 countries. Hugo Boss AG directly owns over 364 shops, 537 monobrand shops, and over 1,000 franchise-owned shops’ [where footnote 9 refers to ‘Chevalier, Michel (2012). Luxury Brand Management. Singapore: John Wiley & Sons. ISBN 978-1-118-17176-9’] and that in ‘2010, the company had sales of $2,345,850,000 and a net profit of $262,183,000 with royalties of 42% of total net profit’ [where footnote 11 refers to ‘Results of Operations in Fiscal Year 2009’ (https://web.archive.org/web/20100902164539/http://annualreport.hugoboss.com/en/facts/results-of-operations-in-fiscal-year-2009.html). Hugo Boss AG. Archived from the original (http://annualreport.hugoboss.com/en/facts/results-of-operations-in-fiscal-year-2009.html) on 2 September 2010. Retrieved 13 February 2011.’]. ‘In June 2013, Jason Wu was named artistic director of Boss Womenswear’. ‘In 2017, the sales of Hugo Boss climbed by 7 percent during the final quarter of the year’ [where footnote 14 refers to ‘‘The Boss Is Back’ (https://www.bloomberg.com/news/articles/2018-01-16/that-hugo-boss-suit-is-starting-tolook-less-crumpled). Bloomberg.com. 2018-01-16. Retrieved 2018-01-25’].

• Two online news articles from 2012 and 2014 (enclosures 2-3) mentioning the strength of ‘Hugo Boss’ in the fashion industry. In particular, the 2012 article from ‘wuv.de Advertising and Sales’ of 14/09/2012 (internet publication, Munich, with 1 489 823 visits) states that the ‘German fashion label can show an almost one hundred percent recognition’ and in ‘the overall ranking no other fashion label [than Hugo Boss] appears so attractive, modern and high in quality in comparison’. It refers to a ‘mafoScorecard’ from the 2012 BrandFeel Ranking in English where ‘BOSS’ had the highest ‘mafoScore’ with 6.9. The 2014 article from ‘Handelsblatt Online’ of 28/08/2014 (internet publication, Dusseldorf, with 14 356 891 visits) lists ‘Hugo Boss’ right after ‘Adidas’ as the second largest men’s outfitter in Germany. The article describes this fashion group as ‘a born manufacturer of work clothes’, employing at the time of the article more than 11 000 employees with sales of over EUR 2.3 billion in 2012 and willing to further expand its business.

• A survey on the mark’s recognition called ‘BOSS/HUGO – Results of Outfit 7.0’ (enclosure 4) from November 2011, conducted in Germany by ‘Spiegel QC’ in English. The sample consists of 5 671 people aged between 14-69 years old. The product sectors are clothing (92 brands) and wristwatches (55 brands). It gives figures for advertising expenditure in the clothing sector from 2001-2010 for different companies and in different media, with the ‘Hugo Boss’ company in the top 10 for advertising expenditure in 2010. According to this study, the brand awareness of the mark ‘BOSS’ in relation to clothing is 93 %, while 26 % of the ‘basic population’ possesses clothing from the ‘BOSS’ brand (where ‘basic population’ means ‘People resident in Germany, 14 to 69 years old (accessible online)’). ‘BOSS’ is also listed among the top 10 brand rankings under ‘Major sports brands are still the best-known’.

 A Google search for ‘HUGO BOSS’ and ‘BOSS clothing’ produced by the opponent allegedly showing a significant number of entries. The screenshots bear a date of 22/04/2020 (enclosure 5).

 A ‘mafoScorecard’ from BrandFeel in German (enclosure 6), which gives a ‘mafo score’ of 7.2 (out of 10) for the trade mark ‘BOSS’ in the fashion sector, and 9.8 (out of 10) for the mark’s awareness level, from a survey conducted in 2011 among 512 respondents.

 An online survey in eight key markets, including France, Germany, Italy, Spain and the United Kingdom, dated November 2011 (enclosure 7), conducted by the company ‘Werbestolz’ (Germany) in English. The study, named ‘Status of HUGO BOSS and Competitors – Awareness and Image of HUGO BOSS Product Lines’, was conducted among men aged 25-49 and women aged 21-49; the sample size of each market was from 1 004-1 015 participants, with a total of 8 074 participants. As far as spontaneous brand awareness (‘Which brands of clothing in the premium or luxury segment do you know, even if only by name?’) in all markets was concerned, the mark ‘HUGO BOSS’ came in 8^th place, right after the mark ‘LOUIS VUITTON’ (page 17). In Germany, the mark appears in 1^st place, in France in 3^rd place, in Italy in 12^th place, in Spain in 8^th place and in the United Kingdom in 6^th place (page 18). The study also provides relevant information on the aided awareness of the mark in the five EU countries, the brand possession, purchase intention, aided advertising recall and the awareness of different product lines under the ‘HUGO BOSS’ mark.

 A judgment from the District Court of Cologne, Germany (enclosure 8), dated September 1996, confirming that the mark ‘BOSS’ is well known in relation to clothing based on the facts and figures presented in conjunction with the documents submitted, reinforced by a private GFK survey of early 1994.

 An excerpt in German of a print medium called ‘Brand Profiles 12.’ of the Stern Group (enclosure 9) allegedly from a study in Germany on fashion conducted in 2007, which shows that the trade mark ‘BOSS’ is known to 87 % of survey participants.

 A judgment from the Paris Court of First Instance (enclosure 10), dated March 2007, based on an opinion poll relating to the ‘BOSS/HUGO BOSS’ trade mark which leads the court to confirm that this is a ‘renowned’ trade mark.

 An affidavit signed by an employee of the opponent on 22/05/2018 (enclosure 11) on the net sales of the ‘HUGO BOSS Group’ in the years 2011-2015 in relation to ‘fashion and clothing accessories as well as bags and leather goods for adults in some exemplary countries of the European Union’ – which are steadily increasing and quite significant, especially in France, Germany and the United Kingdom – and on the advertising expenditure for the mark ‘BOSS’ in some EU countries in 2013 and 2014, which reflects the sales figures, confirming the highest expenditures for France, Germany and the United Kingdom.

 A chart on brand reputation in Europe and worldwide posted on www.rankingthebrands.com (enclosure 12). According to the opponent, this chart shows that ‘BOSS’ is amongst the world’s most important trade marks: for example, in the ‘Top 50 European Love List’ ‘BOSS’ is in 41^st place, while ‘BVLGARI’ is 45^th and ‘LACOSTE’ 47^th. Although the screenshots bear a date of 22/04/2020, they give a brand overview of the trade mark ‘HUGO BOSS’ (often represented as follows: ) per year (2009-2019), per ranking institution and per country (e.g. Germany, the Netherlands, the EU5).

 Interbrand 2015 (enclosure 13) showing that is in position 96.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union.

The survey conducted in 2011 shows a high spontaneous brand awareness of the earlier mark for clothing in a substantial part of the European Union, namely in France, Germany, Italy, Spain and the United Kingdom (enclosure 7). Furthermore, the brand awareness of the mark ‘BOSS’ in relation to clothing is 93 % in Germany, as can be inferred from the 2011 survey ‘BOSS/HUGO – Results of Outfit 7.0’ (enclosure 4). The French and German court decisions also demonstrate a certain degree of recognition of the mark (enclosures 8 and 10). Although they date back to 1996 and 2007 respectively, when viewed in conjunction with the materials as a whole – particularly with the surveys and news articles of 2012 and 2014 – they do offer important, indirect information proving the longevity of the mark in a sector that has a high turnaround. This information is confirmed by the chart on brand reputation (enclosure 12) which gives an up-to-date picture of the mark in the context of other market players, and the Interbrand publication of 2015 (enclosure 13).

Although the evidence is most comprehensive and detailed with regard to Germany, the opponent submitted evidence for a number of other EU Member States, such as France, Italy, Spain and the United Kingdom. It is sufficient if the reputation exists in a substantial part of the EU (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 28; 06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 30) and a reputation proven in Germany is already sufficient to assume a reputation in the whole of the EU (considering that in the ‘Chevy’ and ‘Pago’ judgments the territories of Benelux and Austria were considered to be sufficient). A reputation in France, Germany, Italy, Spain and the UK would therefore inevitably be sufficient.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods for which reputation has been claimed. The evidence mainly relates to clothing for men, women and children, whereas there is no or little reference to the remaining goods in Class 25. This is clear, for example, from the news articles and the online survey conducted by ‘Werbestolz’, where only clothing, or the broader term ‘fashion’, is mentioned.

b) The signs

BOSS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

As already mentioned in the Likelihood of Confusion section above, mutatis mutandis, the unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

Although reputation was established for the whole EU, but was particularly proven inter alia in the United Kingdom, the analysis below focuses on the English-speaking public, considering that the components of the signs can be perceived as English words.

As mentioned in the Likelihood of Confusion section above, the common element ‘BOSS’ of the signs is an English word which will be understood by the relevant public to refer to ‘the person who is in charge of an organisation and who tells others what to do’ (information extracted from Cambridge Dictionary on 04/11/2020 at https://dictionary.cambridge.org/dictionary/english/boss?q=boss_1). It could also be perceived by part of the public as a family name (albeit a rare one). As regards its distinctiveness, the word ‘BOSS’ in any of the above scenarios does not have any meaning related to the goods in question and is therefore considered to have a normal degree of distinctiveness.

As already explained in the Likelihood of Confusion section above, the contested sign’s component ‘bOSS’ is followed by the component ‘CARE’. Notwithstanding the absence of any space between these two, the consumer will identify them as two separate components due to the use of different stylisations. Although in the letter ‘A’ the horizontal bar is omitted, the letter as such is still readily recognisable by the consumers. Moreover, as already explained above, the relevant public normally breaks a verbal sign down into elements that suggest a concrete meaning, or that resemble words that it already knows (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the contested sign will be composed of ‘bOSS’, placed in first position, and ‘CARE’, in second position. The latter, for this part of the public, is considered weak in relation to the goods at issue in Class 10, since they are expressly for medical care. Therefore, the component ‘bOSS’ is the most distinctive element in the contested sign. It is also the one on which consumers will focus, since it is placed at the beginning. Furthermore, the stylisation of the contested sign will be perceived by the public as a merely ornamental feature serving to embellish the verbal element itself. Finally, the contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the word/sound ‘BOSS’, but they differ in the word/sound ‘CARE’ of the contested sign. Visually, they further differ in the stylisation of the contested sign. However, this does not prevent consumers from perceiving the letters as such. Furthermore, as consumers are accustomed to the stylisation of verbal elements in trade marks, they will perceive the stylisation of the contested sign’s components as merely a decorative depiction of the verbal elements.

Therefore, considering the distinctiveness of the various elements, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Insofar as the signs will be associated by the relevant public with the surname/word ‘BOSS’, and for the reasons explained above, it is the most distinctive element in both signs. Therefore, the signs are conceptually similar to at least an average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In light of the abovementioned criteria, on the one hand, the signs are visually, aurally and conceptually similar at least to an average degree, the earlier mark is intrinsically distinctive and the opponent has proven that it enjoys a reputation for clothing. On the other hand, the goods at issue are not only dissimilar, but they also pertain to market sectors which are very far apart and not connected in any plausible way. While clothing refers to items worn to cover the body, the contested medical devices for nonsurgical cosmetic treatments; massage apparatus for massaging necks, backs and feet; medical apparatus and instruments for use in surgery; body rehabilitation apparatus for medical purposes; medical instruments for analysing and identifying bacteria; physiotherapy apparatus; medical diagnostic apparatus, analytical apparatus for medical purposes and; blood pressure measuring apparatus; invalids’ hoists; bandages for joints, anatomical; elastic bandages; vibrating apparatus used in fitness and exercise programs to stimulate muscles and increase strength and physical performance are medical apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals. Indeed, the dissimilarity of the goods also means there will be no likelihood of confusion on the part of the public which, as noted above, is a relevant factor when assessing the link.

The majority of the goods target a completely different public. That is, the goods for which the opponent has a reputation target the general public with an average degree of attention, while the vast majority of the contested goods target professionals in the medical or health fields with a high degree of attention (e.g. medical apparatus and instruments for use in surgery; medical instruments for analysing and identifying bacteria; medical diagnostic apparatus; invalids’ hoists).

While the relevant section of the public for some of the goods covered by the conflicting marks is the same or overlaps to some extent (e.g. elastic bandages), those goods are so different that the later mark is unlikely to bring the earlier mark to the relevant public’s mind. The link requires a certain connection between the goods at issue. Even when there is an overlap of the public or a major reputation, the market sectors concerned by the goods at issue may be so remote that association is unlikely. This is the case here.

The opponent claims that the relevant goods of the contested sign ‘are the in the commercial segment of fitness and wellness in Class 10 … These items have always been in the reign of fashion and the fashion brands like BOSS are expected to enter in this business anytime. Furthermore concept of wellness is very near to the fashion sector because they both aim at the happiness of human beings. In this respect it would be very easy for interested consumers that are average consumers to associate BOSS and / or HUGO BOSS to BOSSCARE’.

However, these arguments cannot succeed. The goods not only clearly differ in nature, purpose and method of use, but also their distribution channels are divergent. The contested Class 10 goods are commonly used in cabinets, hospitals or rehabilitation centres and cannot usually be accessed without the assistance of doctors, physiotherapists or healthcare providers in general. They can also be highly regulated, considering that they have an impact on the well-being of persons and animals. Moreover, while some of the goods at issue may target the same general public, a higher degree of attention will be displayed when purchasing the contested goods, due to their impact on health. There is no market reality that indicates that producers of clothing may also diversify into fields so far removed and, given the lack of any commonalities, it could even be construed as rather far-fetched. Furthermore, the opponent has not adduced any particularities that would alter this finding.

While it is true that Article 8(5) EUTMR is applicable to situations where the goods and services are dissimilar, this provision does not give blanket protection but rather depends on the interplay of the relevant factors. The further apart the goods, as in this case, the more similar the marks and the stronger the reputation will need to be in order for the relevant public to associate the marks. As argued above, the sectors to which the goods pertain are far removed, and there is no market reality that would indicate otherwise. Furthermore, even the average consumer is reasonably observant and circumspect and will clearly be aware of the market reality. As such, they would not see any association between the marks and the goods at issue.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Monika CISZEWSKA

Valeria ANCHINI

Karin KLÜPFEL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.